Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page1 of 26
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`I. NEEL CHATTERJEE (SBN 173985)
`nchatterjee@orrick.com
`WILLIAM H. WRIGHT (SBN 161580)
`wwright@orrick.com
`ROBERT J. BENSON (SBN 155971)
`rbenson@orrick.com
`VICKIE L. FEEMAN (SBN 177487)
`vfeeman@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, California 94025
`Telephone:
`+1-650-614-7400
`Facsimile:
`+1-650-614-7401
`
`DOUGLAS E. LUMISH (SBN 183863)
`dlumish@kasowitz.com
`JEFFREY G. HOMRIG (SBN 215890)
`jhomrig@kasowitz.com
`GABRIEL S. GROSS (SBN 254672)
`ggross@kasowitz.com
`JOSEPH H. LEE (SBN 248046)
`jlee@kasowitz.com
`KASOWITZ, BENSON, TORRES & FRIEDMAN LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, CA 94065
`Telephone:
`1+(650) 453-5170
`Facsimile:
`1+(650) 453-5171
`
`Attorneys for Plaintiffs
`SYNOPSYS, INC., EMULATION VERIFICATION
`ENGINEERING S.A. and EVE-USA, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`SYNOPSYS, INC., EMULATION
`VERIFICATION ENGINEERING S.A. AND
`EVE-USA, INC.,
`
`Plaintiffs,
`
`-against-
`
`MENTOR GRAPHICS CORPORATION,
`
`Defendant.
`
`Case No. 3:12-cv-05025-MMC
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`PLAINTIFFS’ OPPOSITION TO
`MENTOR GRAPHICS
`CORPORATION’S MOTION TO
`TRANSFER
`
`PUBLIC REDACTED VERSION
`
`Date:
`Time:
`Place:
`Judge:
`
`February 15, 2013
`9:00 a.m.
`Courtroom 7, 19th Floor
`Hon. Maxine M. Chesney
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`OPPOSITION TO MOTION TO TRANSFER
`3:12-cv-05025-MMC
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`Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page2 of 26
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`Page
`BACKGROUND ................................................................................................................ 2
`A.
`All Parties Have a Substantial Presence in This Forum.......................................... 2
`B.
`This Forum Is the Center of Accused Activity ....................................................... 3
`C.
`Mentor Graphics’ Serial Litigation Against EVE and Synopsys............................ 3
`D.
`This District’s Prior Experience With the Technology........................................... 4
`ARGUMENT ...................................................................................................................... 5
`A.
`Synopsys’ Choice of Forum Deserves Deference................................................... 6
`B.
`The Private Interest Factors Overwhelmingly Favor This Forum .......................... 8
`1.
`All Parties Have Substantial Contacts With Northern California............... 8
`2.
`Compulsory Process Is Available in This District to Compel the
`Many Essential Non-party Witnesses ......................................................... 9
`Retaining the Action in This District Would Reduce Litigation
`Costs for Both Parties ............................................................................... 12
`Transfer To Oregon Would Not Serve the Public Interest.................................... 12
`1.
`The Pending Oregon Actions Are Different From This Action................ 12
`2.
`Both Courts Can Apply Federal Patent Law............................................. 14
`3.
`Court Congestion Weighs Against Transfer ............................................. 14
`The 2006 “Forum Selection Clause” Is Irrelevant to This Dispute ...................... 15
`1.
`There Is No “Forum Selection Clause”..................................................... 15
`2.
`Synopsys Is Not Suing for Breach or Enforcement of the 2006
`Settlement Agreement............................................................................... 17
`Venue Is Proper In This District ............................................................... 20
`3.
`CONCLUSION................................................................................................................. 20
`
`C.
`
`D.
`
`3.
`
`-i-
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`Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page3 of 26
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`FEDERAL CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Am. Envtl. Servs., Inc. v. Metalworking Lubricants Co.,
`634 F. Supp. 2d 568 (W.D. Pa. 2009)....................................................................................... 8
`
`Argueta v. Banco Mexicano, S.A.,
`87 F.3d 320 (9th Cir. 1996)..................................................................................................... 19
`
`Broadcom Corp. v. Qualcomm Inc.,
`No. SACV 05-468-JVS, 2005 WL 5925584 (S.D. Cal. Oct. 19, 2005) ................................. 19
`
`Cape Flattery Ltd. v. Titan Maritime, LLC,
`647 F.3d 914 (9th Cir. 2011)................................................................................................... 19
`
`Collins v. Virtela Tech. Servs., Inc.,
`No. C 12-613 CW, 2012 WL 4466551 (N.D. Cal. Sept. 26, 2012) ........................................ 19
`
`Decker Coal Co. v. Commonwealth Edison Co.,
`805 F.2d 834 (9th Cir.1986)...................................................................................................... 6
`
`Docksider, Ltd. v. Sea Tech, Ltd.,
`875 F.2d 762 (9th Cir. 1989)................................................................................................... 19
`
`Everpure, LLC v. Selecto, Inc.,
`No. CV 09-2844 AHM, 2010 WL 480970 (C.D. Cal. Feb. 3, 2010)...................................... 13
`
`Flanagan v. Arnaiz,
`143 F.3d 540 (9th Cir. 1998)............................................................................................. 16, 17
`
`Flex-Foot, Inc. v. CRP, Inc.,
`238 F.3d 1362 (Fed. Cir. 2001)............................................................................................... 18
`
`Gen. Protecht Grp., Inc. v. Leviton Mfg. Co.,
`651 F.3d 1355 (Fed. Cir. 2011)............................................................................................... 19
`
`Glaxo Group Ltd. v. Genentech, Inc.,
`No. C 10-00675 JSW, 2010 WL 1445566 (N.D. Cal. Apr. 12, 2010).................................... 12
`
`Gulf Oil Corp. v. Gilbert,
`330 U.S. 501 (1947)................................................................................................................ 11
`
`Guthy-Renker Fitness L.L.C. v. Icon Health & Fitness, Inc.,
`179 F.R.D. 264 (C.D. Cal. 1998) .............................................................................................. 8
`
`In re E. Dist. Repetitive Stress Injury Litig.,
`850 F. Supp. 188 (E.D.N.Y. 1994) ......................................................................................... 11
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`ii
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`OPPOSITION TO MOTION TO TRANSFER
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`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................... 12
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)............................................................................................... 13
`
`Invitrogen Corp. v. Gen. Elec. Co.,
`No. 6:08-CV-113, 2009 WL 331889 (E.D. Tex. Feb. 9, 2009) .............................................. 13
`
`Jones v. GNC Franchising, Inc.,
`211 F.3d 495 (9th Cir. 2000)............................................................................................... 5, 20
`
`K.W. Muth Co. v. Gentex Corp.,
`No. 06-C-0378-C, 2006 WL 2772828 (W.D. Wis. Sept. 22, 2006) ....................................... 13
`
`Kannar v. Alticor, Inc.,
`No. C-08-5505 MMC, 2009 WL 975426 (N.D. Cal. Apr. 9, 2009) ................................. 6, 7, 9
`
`Kokkonen v. Guardian Life Ins. Co.,
`511 U.S. 375 (1994).......................................................................................................... 16, 17
`
`Lowdermilk v. U.S. Bank Nat’l Ass'n,
`479 F.3d 994 (9th Cir. 2007)................................................................................................... 17
`
`Manetti-Farrow, Inc. v. Gucci Am., Inc.,
`858 F.2d 509 (9th Cir. 1988)................................................................................................... 20
`
`Mediterranean Enters., Inc. v. Ssangyong Corp.,
`708 F.2d 1458 (9th Cir. 1983)........................................................................................... 19, 20
`
`N. Cal. Dist. Council of Laborers v. Pittsburg-Des Moines Steel Co.,
`69 F.3d 1034 (9th Cir. 1995)................................................................................................... 19
`
`O’Connor v. Colvin,
`70 F.3d 530 (9th Cir. 1995)..................................................................................................... 16
`
`Omnicell, Inc. v. Medacist Solutions Grp., LLC,
`272 F.R.D. 469 (N.D. Cal. 2011)...................................................................................... 16, 17
`
`Pacesetter Sys., Inc. v. Medtronic, Inc.,
`678 F.2d 93 (9th Cir. 1982)....................................................................................................... 8
`
`Sofamor Danek Holdings, Inc. v. U.S. Surgical Corp.,
`No. 98-2369 GA, 1998 U.S. Dist. LEXIS 21746 (W.D. Tenn. Nov. 16, 1998) ..................... 13
`
`Tahoe-Sierra Preservation Council, Inc. v. Tahoe Regional Planning Agency,
`322 F.3d 1064 (9th Cir. 2003)................................................................................................. 18
`
`iii
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`Tracer Research Corp. v. Nat’l Envtl. Servs. Co.,
`42 F.3d 1292 (9th Cir. 1994)................................................................................................... 19
`
`FEDERAL STATUTES
`
`28 U.S.C. § 1391(b)(2).................................................................................................................. 20
`
`28 U.S.C. § 1406(b) ...................................................................................................................... 20
`
`28 U.S.C. § 1404(a) .................................................................................................................. 5, 20
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`RULES
`
`Fed. R. Civ. P. 12(b)(3)................................................................................................................. 20
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`Fed. R. Civ. P. 12(h)(1)................................................................................................................. 20
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`iv
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`Mentor Graphics Corporation’s motion to transfer this action should be denied. Spending
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`less than two pages on the private interest factors central to any transfer inquiry, Mentor Graphics
`incorrectly seeks to upset Plaintiffs’1 choice of forum. This forum is appropriate because it is:
`(1) where Synopsys and EVE-USA both have their principal places of business (Mountain View
`
`and San Jose, respectively); (2) the location of Mentor Graphics’ self-described “Silicon Valley
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`Headquarters” and one of five California offices or sites (Fremont, Folsom, El Segundo, Irvine,
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`and San Diego); (3) the place where Synopsys and EVE-USA engage in significant activities to
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`develop, test, research, produce, market and sell the ZeBu line of hardware-assisted verification
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`products (hereinafter the “ZeBu Products”) Mentor Graphics alleges are infringing; (4) the home
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`of many relevant third-party witnesses, including those with knowledge of prior art supporting
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`Synopsys’ and EVE’s invalidity claims; and (5) the location of both sides’ primary counsel.
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`Recognizing the weakness of its position, Mentor Graphics clumsily tries to lump this
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`action in with other patent infringement actions between these parties in Oregon. The patents at
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`issue in the pending Oregon cases are unrelated to the patents here. Although all the patents are
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`directed to emulation systems in a broad sense, calling the actions related is like saying a patent
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`infringement action about a steering wheel is related to an infringement action about a carburetor.
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`Notably, the patents at issue in the Oregon actions do not share a single overlapping inventor with
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`the named inventors on the patents in this case. They do not derive from the same specification.
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`And two of the patents asserted here cover inventions developed at different companies (Ikos
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`Systems, Inc. and Virtual Machine Works, Inc.) and were only later assigned to Mentor Graphics.
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`This judicial district has equal or greater familiarity with the technology at issue, having
`already construed eight groups of claim terms in one of the asserted patents. Ikos Systems, Inc. v.
`
`Axis Systems, Inc., Case No. 5:01-cv-21079-JW (N.D. Cal. June 16, 2002) (issuing claim
`
`construction order as to U.S. Patent No. 5,649,176). Given that, transferring this case to Oregon
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`will not promote judicial efficiency; it will only serve to inconvenience all parties and put key
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`1 Plaintiffs Synopsys, Inc. (“Synopsys”), EVE-USA, Inc. (“EVE-USA”), and Emulation and
`Verification Engineering, S.A. (“EVE S.A.”) are referred to collectively as “Synopsys and EVE.”
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`witnesses outside of the reach of the Court’s subpoena power.
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`Mentor Graphics also attempts to recast Synopsys’ and EVE’s claims for a declaration of
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`non-infringement and invalidity as claims to “enforce” the 2006 settlement agreement between
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`Mentor Graphics and EVE. This action is not for breach of the 2006 settlement agreement.
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`It cannot mandate transfer.
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`I.
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`BACKGROUND
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`All Parties Have a Substantial Presence in This Forum
`A.
`Three of the four parties to this action, comprising both Plaintiffs and the Defendant, have
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`headquarters in this judicial district. Synopsys is headquartered in Mountain View, California,
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`where it has had a presence since the company’s founding in 1986. On or about October 4, 2012,
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`shortly after Synopsys filed this action, Synopsys completed its acquisition of EVE S.A., a
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`leading emulation platform supplier. EVE S.A. is a small, innovative corporation headquartered
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`in France. EVE-USA, the United States affiliate of EVE S.A., has its principal place of business
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`in this District, in San Jose, California. EVE-USA, and EVE S.A. (together, “EVE”) jointly
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`develop, market, and support the ZeBu Products, which Mentor Graphics accuses of infringing
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`three of its patents in this case.
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`Mentor Graphics Corporation is a publicly-held corporation with more than 70 field
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`offices worldwide and more than $1 billion in revenue last year. Although its worldwide
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`headquarters are in Wilsonville, Oregon, the company’s website lists two other headquarters in
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`addition to Wilsonville: Silicon Valley (its Fremont, California location) and Munich, Germany.
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`See Declaration of Scott Lindlaw (“Lindlaw Decl.”) Ex. A. In addition to its Silicon Valley
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`headquarters, Mentor Graphics has field offices or customer sites in four other locations in
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`California (Folsom, El Segundo, Irvine, and San Diego). See id. Ex. B.
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`This Forum Is the Center of Accused Activity
`B.
`In this case, the accused products are the ZeBu Products made by EVE. The ZeBu
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`Products are extremely complex hardware/software products used by hardware design and
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`software development teams to verify and debug chip and embedded software designs. ZeBu
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`Products have numerous features and functionalities that allow multiple users, interfaces and host
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`computers to share the same system to emulate any hardware or embedded software design
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`regardless of size, coding style, or memory structure. The development, testing, research,
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`production, marketing and sales decisions as to the ZeBu Products occurred either at EVE-USA
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`in San Jose, California, or in conjunction with EVE-USA’s parent in France. Notably, the
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`research and development of certain specific features likely to be at issue in this action—the
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`front-end software for ZeBu, including for the zFast RTL synthesis tool and for the ZEMI3
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`transactor synthesis tool—occurs here in Northern California. None of that activity occurred in
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`Oregon. Further, of the four named inventors of the three patents-in-suit, one lives in the
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`Northern District of California. Lindlaw Decl. Ex. D. The other inventors live in France or
`Massachusetts. Id. Ex. F. None lives in Oregon.
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`Mentor Graphics’ Serial Litigation Against EVE and Synopsys
`C.
`This is the second time Mentor Graphics has asserted that the ZeBu products infringe U.S.
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`Patent Nos. 6,009,531, (“the ’531 patent”); 5,649,176 (“the ’176 patent”) and 6,240,376 (“the
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`’376 patent”) (collectively the “patents-in-suit”). See Mentor Graphics Corp. v. EVE-USA, Inc.,
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`Case No. 6:06-cv-341 (D. Or.). On November 30, 2006, Mentor Graphics’ first action was
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`dismissed with prejudice, and the parties finalized a settlement agreement in December 2006 (the
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`“2006 Settlement Agreement”).
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`.
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`On or about August 12, 2010, Mentor Graphics commenced a second litigation against
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`EVE by filing a Complaint in the U.S. District Court for the District of Oregon, Case No. 3:10-
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`cv-00954-MO. This new lawsuit did not involve the same patents as the 2006 action. In this
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`second action, Mentor Graphics alleged that EVE infringed U.S. Patent No. 6,876,962 (“the ’962
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`patent”) by making, using, selling, offering for sale, importing and supporting the ZeBu Products.
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`On or about August 17, 2012, Mentor Graphics commenced a third litigation against EVE by
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`filing yet another Complaint in the United States District Court of Oregon, Case No. 3:12-cv-
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`01500-SI, alleging EVE infringes U.S. Patent No. 6,947,882 (“the ’882 patents”) by making,
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`using, selling, offering for sale, importing and supporting the ZeBu Products. The District of
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`Oregon consolidated these two cases on or about November 7, 2012, electing to move forward
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`with those actions and declining to consider the propriety of consolidating the present action as
`well. See Sapoznikow Decl. Ex. 20 at 9:13-18.2
`The three patents-in-suit are different from and unrelated to the two patents asserted in the
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`now-consolidated Oregon action. The parties’ dispute relates to emulation technology.
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`Emulation refers to the ability of a computer program to imitate (or emulate) another program or
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`device. Emulation systems combine hardware, including circuit boards with specific types of
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`logic chips, with sophisticated software that translates a working engineer’s circuit design into
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`programming for the logic chips that implements a physical circuit. The patents-in-suit in this
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`case are about software that modifies the original circuit design before it is loaded onto the
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`emulation hardware. The patents in the Oregon action are either about the emulation system as a
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`whole (the ’962 patent) or a specific circuit detail (the ’882 patent). They pertain to
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`fundamentally different aspects of an emulation system.
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`This District’s Prior Experience With the Technology
`D.
`This Court has at least the same relevant experience with the general technology at issue
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`in this case as the Oregon court. The previous owner of the ’176 patent, Ikos Systems, filed an
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`action for infringement of that patent in this District. Ikos Systems, Inc. v. Axis Systems, Inc.,
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`Case No. 5:01-cv-21079-JW (N.D. Cal. filed Oct. 12, 2001). In that case, the parties fully briefed
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`2 Mentor Graphics submitted the “Sapoznikow Decl.” in support of its motion. See Dkt. No.
`29. Plaintiffs cite exhibits from that declaration rather than reattach the same exhibits.
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`the claim construction issues and presented a technology tutorial, and Judge Ware construed eight
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`groups of claim terms from the ’176 patent alone. The Oregon court has not construed any of the
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`claims of the patents-in-suit.
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`II.
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`ARGUMENT
`Mentor Graphics bears the burden of demonstrating that transfer to the District of Oregon
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`is appropriate “[f]or the convenience of parties and witnesses, in the interest of justice . . . .” 28
`U.S.C. § 1404(a); Jones v. GNC Franchising, Inc., 211 F.3d 495, 497 (9th Cir. 2000) (burden is
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`on moving party). In evaluating the propriety of transfer, the Court should consider private and
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`public interest factors, which may include: “(1) the location where the relevant agreements were
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`negotiated and executed, (2) the state that is most familiar with the governing law, (3) the
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`plaintiff’s choice of forum, (4) the respective parties’ contacts with the forum, (5) the contacts
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`relating to the plaintiff’s cause of action in the chosen forum, (6) the differences in the costs of
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`litigation in the two forums, (7) the availability of compulsory process to compel attendance of
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`unwilling non-party witnesses, and (8) the ease of access to sources of proof.” Jones, 211 F.3d at
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`498-99.
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`Here, Mentor Graphics cannot upset Synopsys’ and EVE’s choice of forum because the
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`Northern District of California is the location with the closest ties to the accused ZeBu Products,
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`the forum with which the parties have the most contacts, and the location of key third-party
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`witnesses who are beyond the reach of the Oregon court’s subpoena power. Transfer also would
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`not serve the “interests of justice” because the pending Oregon actions involve different patents
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`and different accused technology than this action.
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`Synopsys’ Choice of Forum Deserves Deference
`A.
`As a general rule, the party seeking transfer “must make a strong showing of
`inconvenience to warrant upsetting the plaintiff’s choice of forum.” Decker Coal Co. v.
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`Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.1986). In patent cases, the plaintiff’s
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`choice of forum will be honored if it “is the center of the accused activity,” i.e.—“the district in
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`which the defendant is alleged to have developed, tested, researched, produced, marketed, and
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`made sales decisions concerning the accused product.” Kannar v. Alticor, Inc., No. C-08-5505
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`MMC, 2009 WL 975426, at *4 (N.D. Cal. Apr. 9, 2009) (Chesney, J.) (internal quotations and
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`citations omitted).
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`Here, the central facts of the accused activity occurred in the Northern District of
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`California or in conjunction with EVE-USA’s parent in France. The accused product was
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`developed, tested, researched, manufactured, marketed and sold in San Jose, California by EVE-
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`USA or in France; none of that activity occurred in Oregon. See Declaration of Ludovic Larzul
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`(“Larzul Decl.”) ¶ 5. Currently, Synopsys has a six-person research and development team in its
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`Mountain View headquarters working on development of ZeBu Products, with two engineers in
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`France and three engineers in India reporting to this team. Id. ¶ 6. The research and development
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`team in Mountain View works specifically on certain features of the ZeBu Products that are likely
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`to be at issue in this action. There is no R&D work on the ZeBu products conducted in Oregon,
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`and there never has been. Id.
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`Mentor Graphics also has asserted counterclaims for induced infringement, (see Mentor
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`Graphics’ Counterclaims at 10, 11, and 12), which shifts the accused activity more definitively to
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`this District because those claims focus on Synsopys’ and EVE’s marketing efforts and
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`interactions with its customers. Marketing and sales activities for the ZeBu Products for United
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`States-based customers occur primarily out of the Synopsys headquarters in Mountain View,
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`California. Declaration of Ron Burns, II (“Burns Decl.”) ¶ 5. For example, Synopsys’ vice
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`president of marketing, Lauro Rizzatti, and vice president of sales for North America, Ron Burns,
`OPPOSITION TO MOTION TO TRANSFER
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`Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page12 of 26
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`II, are located in Northern California, as are several ZeBu customers, including Intel, a major
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`customer of Synopsys and EVE. Id. ¶¶ 5, 6. The largest installation of ZeBu products at Intel are
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`installed at Intel’s Folsom, California location. Id.¶ 6. And Synopsys’ and EVE’s sales-related
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`agreements with Intel for the ZeBu products are negotiated with Intel personnel located in
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`Chandler, Arizona, at the direction of Intel’s Emulation Center of Excellence, which is managed
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`out of Folsom, California. Id. ¶ 7.
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`Mentor Graphics asserts that this Court should follow the transfer decision of the District
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`of Oregon in the 2010 action. There, the court refused to transfer the action from Oregon to the
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`Northern District of California because it found, among other factors, that “it is more likely the
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`critical witnesses regarding the factual issues raised in this case are located either in France,
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`where the ZEBU Server was invented, or in Oregon, where the allegedly infringed product was
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`invented.” Mentor Graphics Corp. v. EVE-USA, No. 10-CV-954-HU, 2011 WL2133826, at *3
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`(D. Or. Apr. 8, 2011).
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`The Oregon decision is not applicable to this case. That decision concerned a patent not at
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`issue in this action, and the burden there was on EVE, whereas now the burden rests with Mentor
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`Graphics to show that transfer to Oregon is appropriate. And Synopsys, whose accused activity
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`occurred in this District, was not a party to that action. Moreover, Synopsys and EVE
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`respectfully submit the District of Oregon erred in its decision. First, finding venue impossible in
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`France, the court improperly looked to the site of invention of the “allegedly infringed product”
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`(Mentor’s emulation product), when the correct test, as the court itself initially observed, is the
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`site of the allegedly infringing product. See Kannar, 2009 WL 975426, at *4. Second, in
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`weighing the question of whether more critical witnesses were located in Oregon versus
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`California, the Court failed to give due consideration to EVE’s contentions that the allegedly
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`infringing product was developed, tested, researched, manufactured, marketed and sold in the
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`Northern District of California.
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`Because the central facts of the lawsuit occurred inside the Plaintiff’s choice of forum,
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`there are no grounds for according that choice less deference. Therefore, this factor weighs
`OPPOSITION TO MOTION TO TRANSFER
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`Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page13 of 26
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`against transfer.3
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`B.
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`The Private Interest Factors Overwhelmingly Favor This Forum
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`All Parties Have Substantial Contacts With Northern California
`1.
`Synopsys is headquartered in Mountain View, California, and EVE-USA’s principal place
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`of business is in San Jose, California. These corporate seats weigh “strongly” for keeping this
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`action here. Am. Envtl. Servs., Inc. v. Metalworking Lubricants Co., 634 F. Supp. 2d 568, 574
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`(W.D. Pa. 2009) (transfer denied where plaintiff was headquartered in district, giving plaintiff “a
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`connection with this District and a legitimate reason for commencing suit here”).
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`Mentor Graphics too has substantial contacts with this District. On its website, it lists its
`Silicon Valley office in Fremont, California as one of its three headquarters. See Lindlaw Decl.
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`Ex. A. While Mentor Graphics’ emulation division may be “based in” France, its offices in
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`Northern California are involved with the company’s emulation operations. At least some of the
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`marketing, operations, support and sales staff for Mentor’s emulation operations are focused in
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`Folsom and Fremont, California. See Lindlaw Decl. Exs. C, E. A cursory review of Mentor
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`Graphics’ job listings at its Fremont and Folsom offices showed that of its recent openings,
`several job titles or job descriptions contained the term “emulation,” e.g., “Emulation
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`Applications Engineer” and “Associate Rotation Engineer – Emulation.” Id. Mentor Graphics
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`also has chosen to retain lead counsel based in San Francisco. Notably, there is another pending
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`3 Mentor Graphics’ argument that this action is somehow an anticipatory filing, thus
`precluding the Plaintiffs from maintaining their choice of forum, is incorrect. As an initial matter,
`Mentor Graphics is referring to the anticipatory filing exception to the “first-to-file rule,” but
`Mentor Graphics never argues that the first-to-file rule applies here. Pacesetter Sys., Inc. v.
`Medtronic, Inc., 678 F.2d 93, 95 (9th Cir. 1982) (explaining that the first-to-file rule holds that
`when two parallel actions have been filed in different forums, the first-filed case should be the
`one to proceed). The Oregon and California actions here do not represent a race-to-the-
`courthouse scenario the anticipatory suit exception was meant to hold in check; it is, like any
`other declaratory action in this context, “an appropriate vehicle to alleviate the necessity of
`waiting indefinitely for a patent owner to file an infringement action.” Guthy-Renker Fitness
`L.L.C. v. Icon Health & Fitness, Inc., 179 F.R.D. 264, 272 (C.D. Cal. 1998) (internal quotations
`and citation omitted).
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`8
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`Case3:12-cv-05025-MMC Document45 Filed01/25/13 Page14 of 26
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`patent infringement action between these parties also pending in this District, which Mentor
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`Graphics has not sought to transfer to Oregon. See Synopsys, Inc. v. Mentor Graphics Corp.,
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`Case No. 3:12-cv-6467-MMC (N.D. Cal. filed Dec. 21, 2012) (Chesney, J., presiding). Thus, like
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`Synopsys and EVE, Mentor Graphics has a substantial presence in this District, and its decision to
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`maintain one of three headquarters in this district, and five locations in California, shows it would
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`not be inconvenient for Mentor Graphics to litigate here. The fact that all three companies have a
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`significant presence in Northern California weighs for keeping this action here.
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`2.
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`Compulsory Process Is Available in This District to Compel the Many
`Essential Non-party Witnesses
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`The convenience of both party witnesses and, especially, non-party witnesses strongly
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`favors retaining this action in the Northern District of California. “The convenience of witnesses
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`is often the most important factor considered by the court when deciding a motion to transfer for
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`convenience. In balancing the convenience of the witnesses, primary consideration is given to
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`third party, as opposed to employee witnesses.” Kannar, 2009 WL 975426, at *2 (internal
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`quotations and citations omitted).
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`A critical mass of party and non-party witnesses reside in the Northern District of
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`California, such that this action should be retained here. Several likely party witnesses are
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`employees of Synopsys or EVE-USA and reside in this District. As the chart below indicates, so
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`do many important non-party witnesses. Most significantly, an inventor of one of the patents-in-
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`suit (Alain Raynaud, co-inventor of ’376 patent), whom Synopsys and EVE-USA are likely to
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`call as a non-party witness, lives in the Northern District. See Lindlaw Decl. Ex. D. Of the four
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`named inventors of the three patents-in-suit, none lives in Oregon. The other inventors live in
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`France or Massachusetts. Id. Ex. F. And there are many other third-party inventors whose
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`testimony may be relevant to support Synopsys’ and EVE’s defense of invalidity. Below is a list
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`of third-party witnesses located in this District who are likely to have information relevant to this
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`subject matter, primarily relating to the invalidity of the patents-in-suit:
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`